Trademark Prosecution in the Middle East
The Iranian Trademark Registry has launched a new electronic trademark application and workflow system. The new application and workflow system came into effect on November 18, 2012.
With effect from this date, the Iranian Trademark Registry will accept only trademark applications filed electronically. All other filing procedures, formality requirements and documentary requirements remain unchanged. The hard copies of the required supporting documents in original (i.e., power of attorney, incorporation certificate for the applicant) must still be submitted to the Trademark Registry.
Under the new system, trademark examination, notifications to applicants, publication and registration of trademarks are all dealt with electronically. Oppositions, hearings, renewals, the recordal of the transfer of rights and licenses are all still handled as before.
The electronic application and workflow system is available at the portal http://iripo.ssaa.ir which is currently in Persian language.
IRAQ: New Timeline for Submission of PoA
By a regulation issued by the Trademarks Registrar of Iraq on 17 November 2012, a legalized power of attorney (PoA) in support of trademark applications in Iraq can be submitted within six months from the date of filing of the trademark. There is no further grace period available to submit this basic document and if this six month deadline is not met, an application will be considered abandoned.
In order for a PoA to be accepted, the PoA must be super legalized by the Ministry of Foreign Affairs, the Central Bank of Iraq and the Ministry of Justice in Iraq. As this super legalization process may take approximately three months to complete, applicants are urged to provide us with powers legalized up to the Iraqi Consulate in the country of the applicant within three months from the date of a new application.
Further, it should be noted that at the time of filing a new trademark application, the application should be accompanied by a copy of the signed PoA, to be placed on the official file.
Saudi Arabia: Amendments to the Implementing Regulations
The Minister of Commerce and Industry in Saudi Arabia issued a Ministerial Decree concerning trademark registration procedures under No. 1147 on 16 October, 2012, amending 13 articles of the Implementing Regulations to the Saudi Arabian Trademark Law (Law No. M/21).
It is widely believed that the new reforms under the above ministerial decree will shorten the time required to complete the trademark registration process by almost half (5 to 8 months). The new reforms make it imperative for the trademark applicant or its representatives to be present at the Trademark Office to follow up on its applications at each stage of the prosecution process, or the registration process may take longer.
The main features of the new reforms are as follow:
It is the duty of the applicant or its legal representative to follow up its applications on a stage by stage basis. The Saudi Trademark Office (STMO) will issue notifications to the applicant only with refusal decisions or with conditions or requirements for accepting a trademark. The acceptance decision will only be mentioned in the examination forms for the trademark, and it is the applicant’s responsibility to seek notification of acceptance. It is required that the applicant or its legal representative must receive the Notice of Acceptance from STMO within 90 days from the date of acceptance.
Publication must be made within 30 days from the date of reciept of acceptance notifications. The existing period for publication was within six months from the date of acceptance.
Failing to fulfill the above two requirements regarding acceptance of a trademark application will cause the application to lapse.
Accepted applications are now published online on the website of the Ministry of Commerce and Industry (MOCI) or on the website specified by the MOCI instead of official gazettes (http://eservices.mci.gov.sa/Eservices/Commerce/Trademarks.aspx).
No new trademark will be published in the official gazette, except those pending publications that have already been sent and paid for publication before the issuance of the ministerial decree.
In case of any opposition, the opponent must notify the STMO to avoid issuance of a registration certificate while the decision is pending in respect of the opposition. Previously, the claimant/opponent was not required to notify the STMO about oppositions.
Temporary protection is granted to trademarks in respect of goods exhibited in national or international exhibitions if the owner of the trademark presents the temporary protection application at least one month before the date of the exhibition.